(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms prejudicial dismissal of an infringement claim involving "systems and methods for user authentication in which user tokens are supplied through communication devices" based upon the claim construction. Basically, plaintiff challenges constructions on
generating a new password for said first secure computer network based at least upon the token and a
passcode, wherein the token is not known to the user
and wherein the passcode is known to the user;
setting a password associated with the user to be the
new password
Basically, CAFC agrees with the DCTs Philip's reliance on the plain claim language and specification, e.g.:
"Dynapass argues the district court erred in construing
“receiving the password” in claim 12 to preclude separate
receipt of the “passcode” and “token” components of the
password . . . While the written description discloses multiple embodiments for authenticating a user, the patentee’s chosen
claim language unambiguously does not extend to the al-
ternative embodiment where the passcode and token are
received separately . . . Claim 1 recites (1) “generating a new password . . . based at least
upon the token and a passcode;” (2) “setting a pass-
word . . . to be the new password;” and then (3) “receiving
the password from the user . . . .” This language requires generating a password from the passcode and token before
receiving the password. Receiving the passcode and token
separately would not constitute “receiving the password”
since the individual passcode and token components are
not the claimed “password.”
...
The written description supports this construction. In
the alternative embodiment, the written description never
refers to separate reception of the passcode and token as
receiving the password. ’658 patent at 4:59–61 (“In an al-
ternative embodiment, the passcode 154 and the token 156
are submitted separately.”). The written description also
repeatedly juxtaposes the password with the passcode and
token components . . . We see no error in the district court’s construction of
“receiving the password” to preclude separate reception of
the passcode and token."
Ergo, affirmed.
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- CAFC (very briefly) reverses and remands anticipation findings on claims where "[d]evices detect and process a speech command, compute a confidence score that the speech command is a hotword, and transmit the confidence score to other devices."
Basically, CAFC doesn't agree with the Board's interpretation of the references for purposes of anticipation:
"The Board’s finding “that one
device in a ‘better position’ than the other devices [to handle a subsequent user query] then exits its low power mode
and ‘wakes up’ so it can respond to any subsequent user query” is unsupported by substantial evidence because it
assumes a causal relationship between two steps Rosenberger discloses as independent alternatives . . . Sonos argues we may nevertheless affirm under its alternative theory that Rosenberger anticipates the challenged claims because Rosenberger’s devices remain in a
low power mode other than Rosenberger’s self-described,
low power “listening” mode during coordination . . . It is undisputed, however, that the Board made
no fact findings regarding this alternative “low power
mode” theory in its FWDs . . . We decline to make fact findings regarding this alternative theory in the first instance and leave this issue
for the Board to consider on remand."
So, remanded to continue the attack.
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- A brief affirmance on a product-by-process obviousness, CAFC defers to the DCT's fact-finding on motivation to combine, expectation of success, and long-felt need:
"Dr. Appel explained how ovens, fluid beds, and coating
pans were capable of handling hundreds of kilograms of
tablets at a time and were also common pieces of equipment found in drug manufacturing facilities. Dr. Appel further explained why a coating pan would have been an
especially attractive piece of heating equipment, as it allowed large scale curing, followed by coating, and thus a
person of ordinary skill in the art would have been especially motivated to use a coating pan to cure Bartholomäus’s PEO tablets at scale to maximize manufacturing
efficiency."
Ergo, affirmed.
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- CAFC precedentially affirms and dismisses in part. The precedential status is presumably focusing on the 314d bar to CAFC review (Owner alleges that there was a Sotera stipulation violation so the Board never should have heard the IPR):
"Here, the remedy Ms. Hafeman seeks, and its relationship to institution, eliminates any doubt that § 314(d) bars
our review. Ms. Hafeman argues the Board “should have
terminated the IPRs in light of the Sotera violation, or at
minimum, addressed why the IPRs should proceed in the
FWDs” . . . And she requests that we
vacate the Board’s final written decisions and “remand
with instructions to dismiss” the IPRs. . . . The problem
with Ms. Hafeman’s challenge is that it seeks to terminate
the IPRs for reasons related to the institution decision because the Sotera stipulation was a consideration for institution. This makes clear that her challenge “has institution
as its direct, immediate, express subject” and is thus beyond our review . . . This is not a situation
where our review of termination is unrelated to the institution decision . . . "
Ergo, after affirming on the obviousness and claim construction merits, CAFC dismisses as to the Sotera challenge.
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- CAFC precedentially vacates and remands for further Step 2 analysis in this eligibility decision for "patents directed to improvements in a building automation system (BAS)" ("According to the patent, unlike conventional systems
that rely on continuous monitoring and transmission, the
claimed invention operates according to defined polling and
transmission intervals").
(The case also addresses some infringement jury instruction issues and some step 1 analysis, but I'm focusing on step 2 eligibility here: one, for time constraints; two, because CAFC's reasoning on infringement is mostly application of the standard caselaw; and three, the step 1 is relatively standard)
Below, "[t]he district court denied ecobee’s motion, holding
(1) the ’495 patent’s claims were directed to the abstract
idea of “controlling generic ‘components’ using information
from two separate sources (i.e., information from two separate networks),” but “factual disputes” existed concerning
Alice step two." In the jury instructions on eligibility, the DCT then directed:
"Did ecobee prove by clear and convincing evidence
that the limitations of the asserted claims of the
’495 Patent, when taken individually or when taken as an ordered combination, involve only technology which a person of ordinary skill in the art
would have considered to be well-understood, routine, and conventional as of April 9, 2004? "
On that basis, the jury found the claim valid, but CAFC doesn't approve:
"However, neither the district court’s Alice step two verdict form nor the related jury instructions informed the
jury that the ’495 patent’s claims were directed to an abstract idea, much less specified what that abstract idea
was. Nor did they instruct the jury that the abstract idea
itself could not supply the inventive concept under Alice
step two . . . Similarly, the
district court’s instructions did not include any identification of or reference to the abstract idea, instead noting only
that step one “is one for the Court to decide and not the
jury” . . . the district court’s instruction
was inconsistent with this Court’s precedent. This Court
has explained that “[a]fter identifying an ineligible concept
at step one, we ask at step two ‘[w]hat else is there in the
claims before us?’” . . . Consistent with that principle, this Court’s precedent
evaluates the alleged inventive concept at step two in light
of the abstract idea identified at step one . . . None of the cases cited by Ollnova permit consideration
of step two without first identifying7 an abstract idea at
step one."
Thus, after finding that JMOL for ineligibility is likewise inappropriate (and affirming eligibility for some other patent claims at Step 1), CAFC remands to redo the Step 2 analysis for the remaining claims, this time with proper instructions.
James Skelley is a solo practitioner based in Mountain View, California since 2015, focusing primarily upon technology transactions and intellectual property procurement. James' practice also serves as an "incubator" for new legal service technologies / methodologies and a "living example" of their application. To this end, James regularly partners with larger law firms and with his clients so as to improve the practice of intellectual property law.
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